In the patent infringement matter of Ingenico Inc. v. IOENGINE, LLC., C.A. No. 18-826-WCB, litigation partners Kerry L. Timbers and Sharona H. Sternberg obtained a favorable jury verdict for Ingenico in the U.S. District Court of Delaware on July 15, 2022.

Ingenico is a major global provider of point of sale payment terminals, software, and services. When a key payments related customer was sued in 2018 by non-practicing entity IOENGINE alleging infringement of three patents, Ingenico, represented by Sunstein, initiated suit against IOENGINE, seeking declaratory judgment of noninfringement.

In parallel, Sunstein also filed multiple petitions for inter partes review (IPRs) with the Patent Trial and Appeal Board (PTAB), successfully invalidating over 150 of the patent claims in IOENGINE’s three asserted patents. During the IPRs, the federal case was stayed.

Notably, Sunstein’s legal team recently challenged the methodology by which IOENGINE’s damages expert calculated reasonable royalty damages, and the court excluded that expert’s testimony, with the result that the jury trial focused solely on liability, with the issue of damages postponed to a second trial if necessary.

“The fascinating aspect of this case is that our trial team proved that someone else conceived and sold the invention 20 years ago, before IOENGINE did,” said Timbers. “The exhaustive discovery process, led by Sharona Sternberg, included tens of thousands of documents, tracking down a defunct Israeli company, multiple depositions of third parties in Israel as well as 20-plus other depositions, and significant third-party discovery from other witnesses. It was a puzzle that we pieced together for the jury, and it was critical that we told the story from the beginning.”

At trial, the jury was asked to determine whether IOENGINE had proven infringement of any of eight asserted patent claims by Ingenico’s mobile card readers or by their customers’ use of those devices. The jury was then asked to determine whether Ingenico had proved whether any claim found to be infringed was invalid due to prior art.

After four days of testimony, the jury found that no valid claim was infringed. Specifically, the jury determined that two of the asserted claims were not infringed, and that the other six asserted claims were invalid due to prior art.

“This outcome - that no surviving claim is infringed, and Ingenico faces no liability - is a complete win for our client,” said Timbers. “The jury understood that the invention at issue was as old as the hills, and not a newfangled secret.”

Sunstein’s litigation team also included attorneys Joel Leeman, Kevin Mosier and paralegal Steve Ramsdell. Richards, Layton & Finger served as co-counsel for Ingenico.